[Federal Register Volume 75, Number 122 (Friday, June 25, 2010)]
[Notices]
[Pages 36357-36358]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-15468]
[[Page 36357]]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2010-0049]
Clarification on the Procedure for Seeking Review of a Finding of
a Substantial New Question of Patentability in Ex Parte Reexamination
Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
clarifying the procedure for seeking review of a determination that a
substantial new question of patentability (SNQ) has been raised in an
ex parte reexamination proceeding. This notice clarifies that while
issues related to a SNQ determination are procedural, the Chief Judge
of the Board of Patent Appeals and Interferences (BPAI) has been
delegated the authority to review issues related to the examiner's
determination that a reference raises a SNQ in an ex parte
reexamination proceeding. The Chief Judge of the BPAI may further
delegate that authority to the panel of Administrative Patent Judges
who are deciding the appeal in an ex parte reexamination proceeding.
This clarification of procedure will facilitate more efficient
resolution of SNQ issues.
DATES: Effective Date: June 25, 2010. The procedure set forth in this
notice applies to ex parte reexamination proceedings in which an appeal
to the BPAI is decided on or after June 25, 2010. The procedure set
forth in this notice does not apply to inter partes reexamination
proceedings.
FOR FURTHER INFORMATION CONTACT: James T. Moore, Vice Chief
Administrative Patent Judge, Board of Patent Appeals and Interferences,
by telephone at (571) 272-9797 or by electronic mail at
[email protected].
SUPPLEMENTARY INFORMATION: The USPTO will order a reexamination of a
patent only if it determines that a SNQ affecting a claim of the patent
has been raised. See 35 U.S.C. 304. A determination by the USPTO that
no SNQ has been raised is ``final and nonappealable.'' See 35 U.S.C.
303(c). However, a determination by the USPTO that a reference raises a
SNQ is not subject to judicial review until a final agency decision has
been entered in the ex parte reexamination proceeding. See Heinl v.
Godici, 143 F. Supp. 2d 593, 597 n.9 (E.D. Va. 2001) (``The decision to
grant reexamination of a patent only begins an administrative process
and, as such, is * * * not [a] final agency action subject to judicial
review * * * .''); see also Patlex Corp. v. Quigg, 680 F. Supp. 33, 36
(D.D.C. 1988) (``[T]he legislative scheme leaves the [Director's 35
U.S.C.] section 303 determination entirely to his discretion and not
subject to judicial review.''). The USPTO is clarifying that the
Director of the USPTO has delegated to the Chief Judge of the BPAI the
authority to review issues related to the examiner's determination that
a reference raises a SNQ in an ex parte reexamination proceeding. The
Chief Judge of the BPAI may further delegate this SNQ review authority
to the panel of Administrative Patent Judges who are deciding the
appeal in the ex parte reexamination proceeding.
Request for Reconsideration of Examiner's Finding of Substantial New
Question
A patent owner challenging the correctness of the decision to grant
an order for ex parte reexamination on the basis that there is no SNQ
may request reconsideration of the examiner's SNQ determination.\1\ The
patent owner may present this challenge prior to the issuance of an
Office action in the ex parte reexamination proceeding by filing a
statement under 37 CFR 1.530 discussing the SNQ raised in the
reexamination order for the examiner's consideration. See 35 U.S.C.
304. When the examiner makes a rejection based in whole or in part on a
reference (patent or printed publication) in an Office action, the
patent owner may present a challenge to the examiner's SNQ
determination by requesting reconsideration of the examiner's
determination that the reference raises a SNQ and presenting
appropriate arguments in the response to the Office action. See 37 CFR
1.111(b) (the patent owner's reply to an Office action must point out
the supposed errors in the examiner's action and must reply to every
ground of objection and rejection in the Office action). By presenting
arguments regarding the SNQ to the examiner in the early stages of the
proceeding, the patent owner helps the USPTO to resolve the issues
quickly. For example, if the patent owner timely files a statement or
reply, and the examiner agrees with the patent owner that no SNQ has
been raised in the ex parte reexamination proceeding, then the
proceeding will be terminated or the reexamination order will be
vacated (if appropriate). However, if the examiner determines that the
SNQ is proper, further review can be obtained by exhausting the patent
owner's rights through the reexamination proceeding and ultimately
seeking review before the BPAI along with an appeal of any rejections.
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\1\ Separate from the BPAI's consideration of the SNQ issue, a
patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate
an ex parte reexamination order as ``ultra vires.'' Such petitions
will be granted only in the extremely rare situation where the USPTO
acted in ``brazen defiance'' of its statutory authorization in
granting the order for ex parte reexamination. See Heinl, 143 F.
Supp. 2d at 601-02. These types of petitions to vacate an ex parte
reexamination order are not decided by the BPAI, but continue to be
delegated to the Commissioner for Patents and are currently decided
by the Director of Central Reexamination Unit (CRU).
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BPAI Review of Examiner's Finding of Substantial New Question
The patent owner may seek review on the examiner's SNQ
determination before the BPAI along with any appeal of the examiner's
rejections. A patent owner must include the SNQ issue and the
appropriate arguments in its appeal brief to the BPAI.
In order to preserve the right to have the BPAI review of the SNQ
issue, a patent owner must first request reconsideration of the SNQ
issue by the examiner. Accordingly, for ex parte reexamination
proceedings ordered on or after June 25, 2010, the patent owner may
seek a final agency decision from the BPAI on the SNQ issue only if the
patent owner first requests reconsideration before the examiner (e.g.,
in a patent owner's statement under 37 CFR 1.530 or in a patent owner's
response under 37 CFR 1.111) and then seeks review of the examiner's
SNQ determination before the BPAI. In its appeal brief, the patent
owner is encouraged to clearly present the issue and arguments
regarding the examiner's SNQ determination under a separate heading and
identify the communication in which the patent owner first requested
reconsideration before the examiner.
The USPTO recognizes that, without the benefit of the clarification
in this notice, some patent owners who wish to seek a final agency
decision on the determination of a SNQ may have failed to request
reconsideration from the examiner. Thus, for ex parte reexamination
proceedings ordered prior to June 25, 2010, if the patent owner
presents the SNQ issue in its appeal brief, the BPAI panel will review
the procedural SNQ issue along with its review of any rejections in an
appeal and will enter a final agency decision accordingly.
The final decision by the BPAI panel in an ex parte reexamination
proceeding
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may include: (1) Its review of the procedural SNQ issue in a separate
section, and (2) its review of the merits of the rejections. See, e.g.,
In re Searles, 422 F.2d 431, 434-35 (C.C.P.A. 1970) (holding certain
procedural matters that are ``determinative of the rejection'' are
properly appealable to the Board); see also In re Hengehold, 440 F.2d
1395, 1404 (C.C.P.A. 1971) (``[T]he kind of adverse decisions of
examiners which are reviewable by the board must be those which relate,
at least indirectly, to matters involving the rejection of the
claims.''); cf. 37 CFR 41.121 (providing both ``substantive'' motions
and ``miscellaneous''--i.e., procedural--motions, which may be decided
together in a single decision).
The patent owner may file a single request for rehearing under 37
CFR 41.52 for both the decision on the SNQ issue and the merits
decision on the examiner's rejections, resulting in a single final
decision for purposes of judicial review. Judicial review of the BPAI's
final decision issued pursuant to 35 U.S.C. 134, which will incorporate
the decision on the finding of a SNQ, is directly to the United States
Court of Appeals for the Federal Circuit under 35 U.S.C. 141. See In re
Hiniker Co., 150 F.3d 1362, 1367 (Fed. Cir. 1998) (``With direct review
by this court of the Board's reexamination decisions, a patentee can be
certain that it cannot be subjected to harassing duplicative
examination.''); see also Heinl, 143 F. Supp. 2d at 597-98.
Although this is an important issue, an appeal containing a request
for reconsideration of the examiner's SNQ determination is not
widespread. There were three ex parte reexamination appeals docketed in
Fiscal Year 2008, only one in Fiscal Year 2009 and one so far this
year.
The procedure set forth in this notice does not apply to inter
partes reexamination proceedings. A determination by the USPTO in an
inter partes reexamination either that no SNQ has been raised or that a
reference raises a SNQ is final and non-appealable. See 35 U.S.C.
312(c).
Appropriate sections of the MPEP will be revised in accordance with
this notice in due course.
Dated: June 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-15468 Filed 6-24-10; 8:45 am]
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